WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LeSportsac, Inc. v. Chris Painter
Case No. D2013-0568
1. The Parties
Complainant is LeSportsac, Inc. of Reno, Nevada, United States of America (“USA”), represented by Kenyon & Kenyon LLP, USA.
Respondent is Chris Painter of Concord, New Hampshire, USA.
2. The Domain Name and Registrar
The disputed domain name <lesportsacoutlet.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2013. On March 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2013.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on May 6, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant owns many trademark registrations worldwide, principally for the term “lesportsac” with an elliptical design. Complainant also owns United States Trademark Registration No. 2827370 in Class 18 for the typed drawing “lesportsac,” registered March 30, 2004.1
The disputed domain name was registered July 30, 2012 and presently routes to a commercial website purporting to offer a wide variety of genuine “LeSportsac” goods at discount prices.2
5. Parties’ Contentions
A. Complainant
Complainant alleges that it has continuously used the LESPORTSAC trademark for its soft-sided handbags, luggage, totes and travel accessories since 1974. In each of the past four years, Complainant avers, Complainant spent approximately USD 14 million on promotion and advertising, and annual revenues have been in the range of USD 300 million. Complainant alleges that its LESPORTSAC trademark has become famous internationally.
Complainant contends that Respondent uses the disputed domain name to sell counterfeit, unauthorized and likely stolen products, which Respondent represents to be genuine “LeSportsac” products. Complainant avers that Respondent is not an authorized dealer.
Complainant’s legal allegations under the Policy include that (1) the disputed domain name is confusingly similar to a mark in which Complainant has interests, (2) Respondent has no rights or legitimate interests in use of the disputed domain name, and that (3) the disputed domain name was registered and is being used in bad faith.
On the basis of the above, Complainant seeks transfer of the disputed domain name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy and the Rules establish procedures to give respondents notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address from the Registrar’s verification, but the notification was not deliverable to that address. According to US Postal Service records, the Panel has determined that the zip code listed in Respondent’s contact information is in fact nonexistent. The courier company stated that the phone number provided was also incorrect.
The Center also sent email notifications to contacts provided by the Registrar, but the notifications returned delivery errors. There was no available fax contact number.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those details provided by Respondent and listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Language of Proceedings
The Complaint states that the Registration Agreement is in German. Complainant submitted a two-page annex to the Complaint with arguments to support its request for English language proceedings.
The Panel declines to consider those arguments since they appear to have been excised from the Complaint in attempts to trim the Complaint to comply with the 5,000 word limit under paragraph 11(a) of the Supplemental Rules. Nonetheless, the Registrar indicated that the Registration Agreement is written in both German and English, therefore, the Panel confirms that proceedings in English are appropriate. Rules, paragraph 11(a).
C. Substantive Rules
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
These elements must be established even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
D. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
UDRP panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Without the gTLD suffix, the disputed domain name consists of the combination of Complainant’s LESPORTSAC trademark with the added word “outlet.” The Panel concludes that the addition of the descriptive term “outlet” does not negate the confusion created by Respondent’s complete inclusion of the LEPORTSAC trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
In fact, given that Respondent uses its website to promote and distribute products under the LESPORTSAC trademark, the addition of the term “outlet” to Complainant’s trademark in the disputed domain name simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark….”).
The Panel therefore concludes that the first element of paragraph 4(a) of the Policy is established.
E. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the disputed domain name; or
(3) the making of a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
Complainant alleges that Respondent is not an authorized dealer in Complainant’s trademarked goods that Respondent has no license, and that Respondent is not commonly known by the disputed domain name. In the absence of any evidence or response to the contrary, the Panel accepts as true these uncontested, reasonable allegations.
Since Respondent’s website appears to make direct product offerings, the Panel also agrees that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
The more challenging issue is whether Respondent uses the disputed domain name in connection with a bona fide offering of goods under paragraph 4(c)(1) of the Policy. The question is primarily factual, as elaborated below. Examining the available evidence, and again considering that Respondent did not contest Complainant’s factual averments, the Panel agrees that the website appears to be offering goods of such a nature that Respondent’s offers do not qualify as bona fide.
Turning to the evidence, the Complaint annexes screen shots of the product offerings on Respondent’s website, along with images of Complainant’s own website. The Panel would ordinarily be reluctant to accept such evidence without any attempt by Complainant to authenticate it or to assure that the evidence has not been modified.
In this instance, however, the Panel has been able to view online the same screens of Respondent’s website (and the exhibits also show what seem to be the dates of browser screen capture). The Panel has accessed the page at “http://www.lesportsacoutlet.com/lesportsac-dual-zipper-cosmetic-bag-blue-rich-flowers-p-140.html”, which advertises a “LeSportsac” cosmetics bag; the same image appears in Complainant’s Annex F. That bag bears an elliptical label reading “Sport,” which appears not to be a LESPORTSAC mark, but another label altogether. Complainant alleges that the “Sport” label is confusingly similar to the LESPORTSAC trademark design.
In a second exhibit (which the Panel can also view online), the website appears to offer the “LeSportsac Collapsible Backpack Bag Black Elephant Flower.” However, as alleged in the Complaint, the online photos show no visible “LeSportsac” labels.
Annexing another exhibit, the Complaint avers that Respondent’s website also offers as genuine products that are not in the actual “LeSportsac” product line. As is the case with the above-discussed exhibits, the Panel hesitates to make pivotal findings in the absence of proper authentication and admissible testimony.3
As noted though, the Panel has at least been able to verify that the first online offering described above is advertised as a “LeSportsac” product but substitutes for the LESPORTSAC mark the “Sport” label. On the basis of this limited record, the Panel also finds that Respondent is using the disputed domain name to offer products in competition with Complainant. Under the Policy, these uses by Respondent cannot be bona fide or legitimate. See e.g.WIPO Overview 2.0 paragraph 2.3.4
The Panel concludes therefore that the available record supports the existence of a prima facie case under the Complaint. Filing no Response, Respondent has not rebutted the prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
F. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté&Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint and the failure to correct erroneous contact details with the registrar. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent was aware of Complainant’s trademark and product name, which was first used and registered many years before Respondent’s registration. The Panel further infers that Respondent registered the disputed domain name intending to trade on the value of Complainant’s trademark, since the stated purpose of Respondent’s website is to offer “LeSportsac” products for sale. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondent, as explained below.
The Complaint cites decisions from several prior UDRP proceedings brought by Complainant. The Complaint states that those UDRP panels ruled that the use of Complainant’s famous mark as part of a domain name to sell counterfeit goods bearing Complainant’s trademarks clearly demonstrates bad faith under the Policy. Complaint paragraph 50 (citing LeSportsac, Inc. v. Kathy Clapp, WIPO Case No. D2012-2506; LeSportsac, Inc. v. Zhao Zhao, WIPO Case No. D2012-2505; LeSportsac, Inc. v Whois privacy Protect. Serv./liyanghua, WIPO Case No. D2012-1282. LeSportsac, Inc. v. Jiamin Zhang a.k.a. hangjiamin z, WIPO Case No. D2012-1542; LeSportsac, Inc. v. Domain Administrator, WIPO Case No. D2010-2071).
In the abstract, this Panel would agree with that principle. The Panel does not agree, however, that the cited cases stand for the rule, as represented by Complainant -- four of the five cited decisions do not make any finding on the presence of counterfeit goods.
For instance, in the response to Complainant’s counterfeit allegations in LeSportsac, Inc. v. Whois privacy Protect Service/liyanghua, supra, the Panel expressly rejected grounding its finding of bad faith on the presence of counterfeits: “Based on the information provided by Complainant, it does not seem to this Panel that Respondent is selling ‘counterfeit’ Lesportsac branded products (Annex E to the Complaint). However, whether the goods sold on the website are counterfeit or not, does not influence the Panel’s overall finding in this proceeding . . . .” (emphasis supplied)
The panel in the LeSportsac, Inc. v. Whois privacy Protect Service/liyanghua,supra,proceeding based its ruling of bad faith on the respondent’s use of a confusingly similar domain name for commercial gain as a part of its effort to deceive Internet users (under Policy paragraph 4(b)(iv)). Several of the other cited decisions relied on similar reasoning to rule on bad faith.5
The Panel believes that such reasoning is also appropriate here. The Complaint’s lack of authentication and completeness of evidence are among the reasons that the Panel refrains from ruling on whether goods offered by Respondent are counterfeit.
Nonetheless, as noted above the disputed domain name is used to promote sales of products in head-to-head competition with Complainant. This is evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
As a further indication of bad faith, Respondent has also declined to respond to these proceedings and failed to maintain accurate contact details as required in its Registration Agreement, Telstra Corporation Limited v. Nuclear Marshmallows, supra.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lesportsacoutlet.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: May 15, 2013
1 Such “typed drawing” trademark registrations are made without claim to particular font styles, sizes or colors (see 37 C.F.R. §2.52 (regarding current practice respecting “standard character registrations,” formerly called “typed drawings”)).
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO 2.0”), paragraph 4.5. Complainant also submitted annexes reflecting the appearance of the website. Those annexes are consistent with the website’s present appearance on line.
3 A credible statement by a qualified witness who has examined the products should have been provided to explain and authenticate matters averred in the Complaint. The Panel is not prepared to conclude that Complainant’s counsel, though certifying and signing the Complaint, is suitable to serve as such a witness.
4 It is commonly held that “[a] reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods . . . .” WIPO Overview 2.0 Para. 2.3 (emphasis supplied).
5 The apparent direct misrepresentation of several UDRP decisions involving this very Complainant raises serious ethical concerns. This Panel finds that this aspect of the Complaint goes beyond the permissible range of “good-faith and reasonable argument” and is inconsistent with counsel’s mandatory certification under paragraph 3(b)(ix) of the Rules.